THE FASHION LAW EXCLUSIVE - You may have seen Reformation’s “it” sweatshirt, the one with “Cindy Crawford” emblazoned on the front (pictured below). The New York-based brand known for its eco-friendly fashion initially released the sweatshirt in 2013, but when it sold out quickly, Reformation re-introduced the style last year. It seems that Zara has taken a bit of inspiration from Reformation and is offering for sale a $50 sweatshirt and matching t-shirt with the words “Elle MacPherson” – the name of another 90’s supermodel – on the front. The problem with this? Nothing! It turns out that Zara has acquired all of the necessary intellectual property rights (namely, trademark rights) from MacPherson in order to legally manufacture and sell garments that bear her name.
It seems that Crawford either signed off on or was not terribly bothered by Reformation’s use of her name. In fact, Crawford was a big supporter of the sweatshirt. She was photographed in the sweatshirt for a W magazine editorial and featured a photo of her mini-me daughter, Kaia Gerber, in one of the sweatshirts on her Instagram. Moreover, she told W that she thought that seeing newer supermodel, Karlie Kloss, wearing the sweatshirt was “cool.”
UPDATE: According to individuals from Zara's Communication and Corporate Affairs Division, Zara and MacPherson do, in fact, have a formal licensing arrangement, since legally, a retailer can’t put a famous person’s name or image or likeness on a product and sell it (as we learned in the Rihanna vs. Toyshop case, for instance), because of the right of publicity and/or federal trademark laws.
While Zara and MacPherson are acting in accordance with both trademark and right of publicity laws, let's take a look at what course of action MacPherson or a similarly situated individual would hypothetically have if his/her name (or image or likeness) were included on an item in commerce ...
THE RIGHT OF PUBLICITY
In general, the right of publicity grants individuals the authority to control the commercial use of his or her own name and likeness. To hold someone liable for the unlawful use of another’s name or likeness, that party that initiated the lawsuit typically has to be show that an attribute protected by law (read: name, picture, voice, etc.) is being used for exploitative purposes without consent. As is typical with the law, it’s not actually that simple, though, because right of publicity laws vary from state to state.
Assuming that Zara did not enter into a licensing agreement with MacPerson for the right to sue her name (although, as indicated above, it did), and MacPherson were to file suit, there’s a chance she’d do so in New York, where the right of publicity law is codified as part of a statute with two sections – Section 50 and Section 51. As would be typical, she would likely reference both sections. Section 50 basically just defines a right of publicity violation as a misdemeanor. Section 51, on the other hand, provides protection for a person’s name, portrait, picture, and voice. To constitute a violation of Section 51, a use of a person’s identity must be: within New York state, for advertising or trade purposes, and without written consent.
In case a right of publicity claim is not enough, MacPherson would hypothetically be able to rely on trademark grounds. If the Spanish fast fashion giant did not have the model’s authorization to use her name then it would absolutely liable on the ground of federal trademark infringement. (As indicated above, that is not the case at hand.)
For the uninitiated, the Lanham Act is the primary law that governs the protection of trademarks in the U.S., and it establishes the right of trademark owners to attain a federal registration of their marks. Registration grants the trademark owner various rights, including the right to prevent others from using and registering marks that are confusingly similar his/her registered mark(s).
The use of another's mark (or one that is confusingly similar to it) amounts to trademark infringement. Put simply, the test for infringement is whether the secondary mark “is likely to cause confusion, or to cause mistake, or to deceive” consumers into thinking that it is affiliated with, connected to or endorsed by the original trademark owner. This would likely be an easy case to make here (had Zara not acquired rights in the Elle MacPherson name), particularly given the fact that MacPherson has a federal trademark registration for her name in a number of classes of goods, including class 25, which covers clothing. Moreover, given that MacPherson’s name is emblazoned on the sweatshirt, it is not a stretch to assume that she is in some way connected to the sweatshirt, potentially by way of a collaboration.
As we have learned from a number of cases in the past (including the one that Rihanna filed against Topshop and Kanye, Beyonce, Rihanna and co. filed against Eleven Paris), it is better to be safe than sorry in terms of putting the names and/or images of famous individuals on garments without their authorization. With this in mind, take a page from Zara's book and enter into a licensing agreement with the individual at issue and acquire the right to use the name, image or likeness in order to avoid trademark and/or right of publicity issues.